Question: I've received a cease-and-desist letter from some corporation telling me to stop marketing one of my business's products in a way that violates their trademark. We're not even in the same industry. Are they serious?

Answer: Businesses, especially large corporations, pour substantial amounts of money into marketing their trademarks and building their brands. They often view anything that mimics their marks or suggests any unwarranted association as a threat to their bottom line. For some business owners, cease-and-desist letters are rare and enough to compel them to make a panicked call to a lawyer.

Under the federal Latham Act, the owners of a trademark can pursue civil action against any party that uses "any reproduction, counterfeit, copy or colorable imitation of a registered mark" in relation to the "sale, offering for sale, distribution, or advertising of any goods or services." In cases where one party is selling or marketing a good or service that does not blatantly knock off a registered mark, the matter usually hinges on whether the "use is likely to cause confusion, or to cause mistake, or to deceive."

As the U.S. District Court for the Southern District of New York noted in Pristine Industries, Inc. v. Hallmark Cards, Inc. (1990), there is something called the Polaroid test, which is named after an infringement case involving the namesake camera company. This test is used to determine whether there is likelihood for confusion between marks. It takes into consideration the strength of the allegedly infringed mark, the quality of the alleged infringing party's product and its efforts to establish its own mark, product similarities, customer sophistication and the likelihood of confusion.

Pristine, for example, involved a sportswear company that accused greeting card giant Hallmark of infringing on its "Hotdogger" label, which features a federally registered word mark of the same name and the character of a human-like hot dog engaged in several activities including skiing.

Around the same time, the clothing company was selling T-shirts and ski jackets bearing the Hotdogger word mark and character, Hallmark was marketing a "Hot Dogger" Christmas ornament of a skiing anthropomorphic hot dog.

The court found that the clothing company lacked a strong mark because the level of sales its "Hotdogger" apparel was too small. Further, it noted that "hotdogger" is a slang term for "show off" and is commonly associated with skiing. Therefore, "the design of a character based on a word that already contains strong connotations of surfing or skiing does not rise to the level of a strong mark."

While the two marks were very similar, the court gave this factor little weight because it found that Hallmark's sale of its ornament under its own well-known label would ensure that customers would not confuse the source of the products. It also said the companies' products were not proximate because "Christmas ornaments and ski wear are not by any stretch of the imagination substitute goods."

Ultimately, the court denied the clothing company's motion for preliminary injunction, finding it failed to show a likelihood of confusion under the Polaroid test. It similarly rejected claims of likelihood of dilution and copyright infringement.

Businesses that have been accused of infringing on another party's trademarks or copyrights should immediately contact an intellectual property attorney, as should anyone who believes they are the victim of such infringement.

Mathew B. Tully is author of The Saratogian's "Ask the Lawyer" column and founding partner of the law firm Tully Rinckey PLLC in Colonie. E mail business-related questions to askthelawyer@1888law4life.com. The information in this column is not intended as legal advice.